WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association, Inc. v. James Ferrarie

Case No. D2017-0100

1. The Parties

The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“United States”), represented by Covington & Burling, United States.

The Respondent is James Ferrarie of Middle Island, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <aaagetawaywinetours.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2017. On January 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2017.

The Center appointed Ellen B Shankman as the sole panelist in this matter on February 21, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The date of the Domain Name registration was confirmed by the Registrar to be June 9, 2016.

The Complainant provided evidence of multiple trademark registrations for the mark AAA alone and together with other terms such as AAA VACATIONS including, inter alia, United States Registrations Nos. 829265 (registered on May 23, 1967) and 2120266 (registered on December 9, 1997) that predate the date of the Domain Name registration for a variety of travel related services. The Complainant also provided evidence of its website promotions of wine tours, including tours in the New York wine region.

The Panel also conducted an independent search to determine that the Domain Name redirects to an active website “www.longislandwinetours.com” that promotes travel and wine tours in the New York wine region by the Respondent.

The Complainant also provided evidence of sending two cease-and-desist letters before commencing the proceeding, to which the Respondent has not answered.

Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

5. Parties’ Contentions

A. Complainant

The Complainant, the American Automobile Association, Inc. (“AAA”) bases its Complaint on its ownership of United States federal trademark registrations and common law rights in the United States in its AAA and associated trademarks (collectively the “AAA Marks” or “Marks”), which it has long used in commerce in connection with a broad variety of goods and services. The Complainant cites extensive precedent in which it has been found that the AAA Marks are valuable and famous in the United States and elsewhere. See The American Automobile Association, Inc. v. Spins Unlimited, David Snyder,
WIPO Case No. D2013-1827 (“AAA is well-known by the public, based on U.S. and International registration and the Marks’ substantial fame in the United States and abroad.”); The American Automobile Association, Inc. v. AAA Ins. Agency, Inc. 618 F. Supp. 787, 790 (W.D. Tex. 1985) (“AAA is a widely known organization that has been extensively advertised and promoted throughout the United States. . . . [T]he ‘AAA’ name has come to be relied upon by a significant segment of the public as indicating AAA and its services.”); The American Automobile Association, Inc. v. AAA Auto. Club of Queens, Inc., No. 97 CV 1180, 1999 WL 97918, at *5 (E.D.N.Y. Feb. 8, 1999) (“[T]he AAA Marks strongly indicate the source of the services provided and are therefore entitled to the greatest degree of protection under the Lanham Act.”).

The Complainant alleges that since its founding over a century ago, AAA has offered its products and services to its more than 50 million members in the United States and Canada. These goods and services include travel agency services, such as arranging tours and offering tour discounts.

The Complainant claims that in or around November 2016, AAA learned that the Respondent was using the Domain Name to redirect to the website “www.longislandwinetours.com”, on which the Respondent hosts a website offering touring services.

On November 18, 2016, the Complainant alleges it sent a letter to the Respondent, demanding that the Respondent cease all use of the Domain Name and immediately transfer registration for the Domain Name to AAA. On December 19, 2016, AAA sent a second letter to the Respondent, reiterating its request. The Respondent has not replied to any of AAA’s communications and continues to use the Domain Name.

The Complainant also alleges that AAA has since discovered that the Respondent owns other domain names, several of which similarly include trademarks that appear to belong to third parties, such as <bedellwinetour.com>, <laurellakevineyardtour.com>, <macariwinetour.com>, <marthaclaravineyardtour.com> and <palmervineyardtour.com>.

The Complainant alleges that the Domain Name is substantially and confusingly similar to the Complainant’s AAA Marks. The Domain Name includes the entire AAA Mark, with the addition of the generic terms “getaway,” “wine,” and “tours”. In particular, adding the generic terms “getaway,” “wine,” and “tours” to the AAA Marks heightens the likelihood of consumer confusion because AAA is well-known for its travel agency services, including arranging tours and offering tour discounts. Accordingly, the Respondent’s use of the Domain Name is likely to cause, and may have already caused, consumers to become confused as to the source, sponsorship, affiliation, or endorsement of the Respondent’s domain name. See, e.g., Lockheed Martin Corporation v. Deborah Teramani,
WIPO Case No. D2004-0836 (registering domain names that include a famous mark in combination with other terms “would undoubtedly cause Internet users intending to access the Complainant’s website, but who reach a website through any of the disputed domain names, to think that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship would exist at all”).

The Complainant argues that the Respondent’s use of the Domain Name to redirect to a website for “Long Island Wine Tours”, which advertises touring services in competition with AAA constitutes “neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses”. See The American Automobile Association Inc. v. Top Business Names,
WIPO Case No. D2012-2295. The Respondent assuredly was aware of AAA and its Marks when registering the confusingly similar Domain Name and has intended to divert Internet users seeking AAA’s services to the Respondent’s website. See The American Automobile Association, Inc. v. Kevin Cruz,
WIPO Case No. D2015-1271 (no rights or legitimate interests where there was “nothing in the record to indicate that the Respondent chose the disputed domain name for reasons unrelated to the Complainant”); The American Automobile Association, Inc. v. Private Whois Escrow Domains Private Ltd. / K.A.L. Services,
WIPO Case No. D2009-0822 (to constitute a bona fide offering of goods or services, a domain name found to be confusingly similar must have been chosen for reasons completely unrelated to the Complainant’s marks).

In addition, the Complainant argues that the Respondent’s actual or constructive knowledge of the AAA’s Marks, based on United States and international registrations and the Marks’ substantial fame in the United States and abroad, is further evidence of its bad faith. See The American Automobile Association, Inc. v. Sompop Padungkijjaroen,
WIPO Case No. D2012-2168 (“Given the distinctive nature of the Complainant’s AAA Marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant . . . .”); see also The American Automobile Association, Inc. v. Diane Robinson,
WIPO Case No. D2014-0366 (“Respondent cannot be ignorant of the Complainant’s AAA Marks based on the Complainant’s established fame in the U.S. and internationally.”); The American Automobile Association, Inc. v. Charles Franklin, The Freedom Law Firm, P.A.,
WIPO Case No. D2016-1439 (“Bad faith can be found where respondents ‘knew or should have known’ of the complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest.”). The Respondent first registered the Domain Name in June 2016, more than a century after AAA began using its famous marks in commerce in 1902. The Respondent also has no excuse for its continued infringing registration and use of the Domain Name after AAA put it on actual notice of AAA’s rights. In addition, the Complainant argues that the Respondent appears to have a history of registering domain names that infringe third parties’ trademark rights, which further evidences its bad faith under Policy paragraph 4(b)(ii). See STYLIGHT GMBH v. Whoisguard Protected, Whoisguard, Inc. / Jillian Jones,
WIPO Case No. D2016-0656.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark AAA alone and/or as part of a device or with other words, in respect of a wide range of goods and services related to travel and tours. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the terms “getaway” “wine” and “tours” does not significantly affect the assessment that the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has registered trademark rights for AAA, and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the generic and/or descriptive terms “getaway” “wine” and “tours” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark, and if anything, enhances it to suggest the offer of the Complainant’s goods and services, and even gives the impression of “partnership”. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,
WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.

The Panel agrees with the Complainant’s argument that it is well settled that a domain name is confusingly similar to a trademark when the domain name includes the entire mark, even if one or more dictionary terms are added. This is also consistent with findings in other UDRP panel decisions regarding AAA: See, e.g., The American Automobile Association, Inc. v. Private Registration, WhoIsGuardService.com,
WIPO Case No. D2015-1584 (the domain name <aaamyprepaidbalance.com> is confusingly similar to AAA Marks for credit services); The American Automobile Association, Inc. v. Top Business Names, supra (the domain name <aaamyprepaidbalance.com> is confusingly similar to AAA Marks for automotive goods and services); see also The American Automobile Association, Inc. v. Bao Shui Chen, Poste restante,
WIPO Case No. D2016-0229 (“It is well established that the addition in a domain name of a generic or common term to a mark generally is inapt to distinguish the domain name from the mark.”).

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its mark.

The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the Complainant’s trademark, and agrees in the particular context of this case with the Complainant’s argument and the finding in Guerlain S.A. v. Peikang,
WIPO Case No. D2000-0055 in which the panel stated that: “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of a lack of a right or legitimate interest on the part of the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,
WIPO Case No. D2004-0312.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant’s mark when it registered the Domain Name. The Panel agrees with the Complainant’s claims and finds that the Respondent has registered the Domain Name with knowledge of the Complainant’s trademark and that the continued use of the Domain Name is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin,
WIPO Case No. D2013-2046. It has been held in previous UDRP decisions that knowledge of a corresponding mark at the time of the domain name’s registration can suggest bad faith. See LEGO Juris A/S v. Reiner Stotte,
WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,
WIPO Case No. D2006-0464; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services.,
WIPO Case No. D2000-0177.

The Panel finds that the Respondent’s registration and use of the Domain Name to redirect to a website for “Long Island Wine Tours”, which advertises touring services in competition with the Complainant is disruptive of the Complainant’s business and is further evidence of bad faith registration. This holding is consistent with the holding in The American Automobile Association, Inc. v. Wanjun Li,
WIPO Case No. D2010-1481 (the Respondent’s use of a confusingly similar domain name to advertise services of AAA’s competitors disrupted AAA’s business and constituted bad faith registration and use).

The Panel finds compelling evidence in the record that the Respondent’s conduct of registering multiple domain names comprising other third-party brands that redirect to the same website further demonstrates registration and use of the Domain Name in bad faith.

Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name, with apparent full knowledge of the Complainant’s trademark, for promotion of competitive services, and the pattern of other improper/deceptive registrations of domain names of other known trademarks, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aaagetawaywinetours.com> be transferred to the Complainant.